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EPO breaks the Court of Appeal’s serve on exclusions from patentability

The exclusions from patentability enshrined in Article 52 of the European Patent Convention (“EPC”) have been causing headlines of late and the recent Board of Appeal’s decision (T 0154/04) has seen the EPO deliver a stinging return across the UK Court of Appeal’s baseline.

Background

Article 52 EPC provides that patents may be granted for inventions that are new, have an inventive step and are capable of industrial application provided they are not (amongst other criteria) methods for doing business or programs for computers “as such”.

Fifteen – Love

In October 2006 the Court of Appeal considered two applications for allegedly excluded matter Aerotel Ltd v Telco Holdings Ltd (& ors) and Macrossan’s Patent Application [2006] EWCA Civ 1371. Jacob LJ gave the leading judgment and concluded that the EPO case-law was hopelessly contradictory. Jacob LJ invited the then President of the EPO, Prof Pompidou, to refer questions concerning the correct interpretation of the EPC to the Enlarged Board of Appeal. Jacob LJ also laid down a four step test to be used when considering the patentability of business method and software applications namely: (i) properly construe the claim, (ii) identify the actual contribution, (iii) ask whether it falls solely within the excluded subject matter; and (iv) check whether the actual or alleged contribution was actually technical in nature.

Fifteen All

Prof Pompidou refused to consider Jacob LJ’s request stating: “there is insufficient legal basis for a referral” and “there are insufficient differences between current Board of Appeal decisions dealing with Art52 EPC exclusions on important points of law…” .

Fifteen – Thirty

The Technical Board of Appeal’s decision, T0154/04 Duns Licensing Associates LP dated 15 November 2006 has just been published. It concerns an application to patent a method of estimating product distribution and amounts to a complete dismissal of the Macrossan approach espoused by Jacob LJ.

Outcome

The Technical Board of Appeal has given a thorough decision concerning how best to approach Article 52, in particular noting:

There are four independent criteria for patentability: (i) an invention; (ii) novelty, (iii) inventive step; and (iv) that the invention must be capable of industrial application.

Only a lay person would consider that the definition of invention requires novelty and inventive step – the criteria are independent. The criteria are independent but cumulative requirements of patentability.

The EPC does not define what an “invention” is. However the Board of Appeal opines that the definition requires “technical character” and nothing in Article 52 excludes something with “technical character” from patentability.

To examine patentability it is necessary to construe the claims of the patent to define the “technical features” which contribute to the “technical character”.

It is permissible to have a mix of technical and non-technical features appearing in the claim but assessments of novelty and inventive step can only be based on technical features.

When considering a “problem/solution” approach the problem must be a technical one but it can be formulated using an aim to be achieved in a non-technical field.

The Technical Board went on to claim that these principles have a clear and consistent basis in the EPC and in the case law of the boards of appeal and the Enlarged Board of Appeal.

Lastly the Technical Board considered Jacob LJ’s judgement in Aerotel/Macrossan and noted that his approach, one of technical effect, “…is not consistent with a good faith interpretation of the European Patent Convention…”. A fairly stinging baseline return of serve which was followed up with the point winning volley that the Aerotel/Macrossan approach is “irreconcilable with the European Patent Convention ... for the further reason that it presupposes that “novel and inventive purely excluded matter does not count as a ‘technical contribution”.

Comment

There are currently two known knowns (to borrow a phrase!): (A) the EPO’s and the UK Courts’ case law is openly at odds and (B) the EPO and UKIPO have stated, at a CIPA seminar last week, that it is possible to gain a patent before the EPO that UKIPO would refuse to grant.

We consider that the discrepancy between the two approaches is overstated and that in fact it will be rare to obtain a patent before one tribunal that would fail before the other provided that care is taken in drafting the patent as both approaches boil down to novelty and inventive step in the final analysis.

In the meantime we must await a House of Lords decision and hope that the new President of the EPO, Alison Brimelow, can find a sensible path through the rhetoric.

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